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Tuesday, November 8, 2011

Surrender of Patents: Consequences

Surrender of patents and its implications are not usually discussed, probably because it is not an option employed by patentees as often as revocation is by defendants, or at least not reported when employed.

Section 63 of the Patents Act deals with surrender of patents. It says that a patent may be surrendered by a patentee at any time by giving notice to the Controller. The corresponding rule is Rule 87, however the rule does not prescribe a particular form, so I am guessing any form which comes closest for this purpose may be used after modifying it suitably (Rule 8(2)).

What happens when a patent is surrendered? Does it go off the register as a matter of course? Section 63(4) says the Controller may hear any opposition to the surrender of a patent, and by order revoke the patent.

The “may” is used in connection with hearing an opponent who objects to the surrender of the patent. This means a hearing in an opposition to the surrender of a patent is not mandatory. This is in stark contrast to a pre-grant opposition, where hearing the opponent is mandatory.

Does the Controller have to mandatorily revoke a patent which a patentee wishes to surrender? Rule 87(4) is categorical in saying that after receiving the patentee’s offer of surrender, the Controller “shall” by order revoke it, and publish the revocation.

For quite some time, I was under the impression that revocation does not mandatorily follow surrender because I was of the view that post surrender the patent would revert to the State vesting the State with the same rights as the patentee. Turns out that although the logic is appealing, the Act says otherwise.

The other question is who can oppose the surrender of the patent? Section 63 says “any person interested” may oppose the surrender of a patent. Rules 57-63 would govern the opposition proceedings.

Why would anyone want to oppose the surrender of the patent? It could be a licensee who wishes to continue exploiting the patent. It could be a defendant in a suit for infringement of the patent who wishes to see the patent revoked in a counter-claim for revocation which is pending before the Court, than by surrender by the patentee.

In the latter situation, is there a bar against the patent being surrendered by a patentee mid-way during the revocation proceedings in a counter-claim to a suit or in a simple revocation proceeding? Section 63 does not appear to forbid surrender in either of these circumstances. Therefore, it appears possible for a patentee to surrender a patent, and make a dignified exit from a suit or a revocation proceeding.

5 comments:

What is the status of the opposition proceeding when the patentee does not reply to the opposition to surrender within two months?The opposition process is as per 57-67 as you rightly pointed out, but the process talks of general opposition to grant of patent. Opposition to patent being surrendered is with intent ( by say the licensee,etc)to safe guard his interests in the patent.Sir please help in understanding this part please!

Dear Samarth,Good question! I am hazarding a guess here and I could be off the mark. I would think that the consequence of the patentee not filing a reply statement to the opposition to surrender, could be that his application to surrender stands successfully opposed, which means the patent remains in force. After all, that would be the prayer of the opponent as well. Please let me know if you think there could be other potential and sensible outcomes.

Dear Sudheer,Surrender could be for any number of reasons, and this would depend entirely on the motives for surrender. It could be to let go of a patent which has no commercial prospects, or to avoid challenges to a weak patent. As for the second part of your question, if the patentee fails in an opposition or a revocation, the patent stands revoked. There is no further need for any surrender, and therefore Section 63 wouldnt apply. Please let me know if this helps.